Learn what steps you need to take to maintain the validity of your trademark registration in Mexico, especially the Declaration of Actual and Effective Use of Trademarks. This detailed guide covers deadlines, requirements, and rules for international registrations (Madrid Protocol).
Introduction
Obtaining a trademark registration in Mexico grants its owner the exclusive right to use it within Mexican territory. However, obtaining a trademark registration is only the first step toward effective protection. It is essential to comply with the obligations established by the Federal Law for the Protection of Industrial Property to guarantee the continuous and effective protection of your industrial property assets.
This practical guide, prepared by COSIO Abogados, is aimed at foreign firms, in-house legal advisors, and business owners seeking to successfully navigate the Mexican market and the processes of the Mexican Institute of Industrial Property (IMPI).
What is the Use Declaration and why is it mandatory?
Mexican law requires that a trademark be used in Mexican commerce (1) exactly as registered and (2) for the goods or services covered by its trademark registration. Failure to comply with this obligation results in the automatic and irrevocable expiration of the trademark registration.
IMPI requires trademark holders to declare their use in commerce within certain legal deadlines.
It is important to note that the IMPI (Mexican Institute of Industrial Property) does not issue official communications or reminders to submit these declarations; therefore, proactive monitoring is the sole responsibility of the trademark owner.
Critical Deadlines for Trademarks in Mexico
To maintain a trademark registration obtained directly in Mexico, there are two non-extendable deadlines:
1. Declaration of Use in the Third Year of Registration
This is mandatory for all registrations granted on or after August 10, 2018.
It must be submitted within three months following the third anniversary of the registration being granted.
2. Declaration of Use at the Time of Renewal:
When applying for trademark renewal (every 10 years), the owner must simultaneously declare the actual and effective use of the trademark.
Considerations for International Registrations (Madrid Protocol)
Owners who have designated Mexico through the Madrid System (WIPO) must comply with specific rules to maintain and prevent the expiration of their national registrations:
• Third anniversary of the national registration: A declaration of use must be filed within three months after the third anniversary of the granting of protection in Mexico.
This deadline is independent of the expiration date of the original international registration.
• Subsequent declarations: A declaration of use must also be filed within three months after WIPO notifies IMPI of the renewal of the international registration.
Important consideration: Trademark registrations in Mexico are exclusively single class. If your international registration covers more than one international class, your international registration is divided into multiple national registrations for each international class.
Requirements for Foreign Trademark Holders
Trademark holders residing abroad must have local legal representation in Mexico to manage these declarations.
It is recommended that this representative be an attorney specializing in industrial property law to ensure the accuracy of the declared information and mitigate risks.
Do you need advice on maintaining your trademarks?
Ensuring the validity of your intellectual property assets in Mexico requires technical precision and rigorous adherence to deadlines. At COSIO Abogados, we specialize in representing international clients before the Mexican Institute of Industrial Property (IMPI).
Do you have any questions? We would be happy to assist you. Send us an email to dario@cosio.mx and we will contact you to assist you with your trademark declarations and renewals.
